Well, it’s official: Naruto, the crested macaque monkey who took photographs of himself while on a reserve on the island of Sulawesi, Indonesia in 2011, lacks statutory standing under the US Copyright Act to sue for copyright infringement.

As we had previously reported to you in earlier blogs, a controversy erupted several years ago over who, if anyone, owns the copyright in “selfie” photographs that were taken by a monkey on an unattended camera. It was determined that David Slater, the photographer who left his camera unattended in the Indonesian reserve, did not own the copyright since he did not take the photographs.

Two incredible things happened in 1992 for the NFL football team Washington Redskins. It won the Super Bowl and applied to register a trademark Washington Redskins. It has not been so lucky ever since. It has not won another Super Bowl and has not registered that mark since 1992. Now, thanks to the touchdown scored by the Supreme Court for Washington Redskins and its compadres The Slants band of Asian-American musicians in the Matal v. Tam case last term, the team just converted its 25-year old application into a US registration and is about to get its six presently-cancelled other US trademark registrations back. This is a natural fall out from the Supreme Court’s decision to invalidate the Lanham Act’s Section 2(a) prohibition against registering “disparag[ing]” trademarks as an unconstitutional restriction on free speech. [See Mintz Levin’s prior post on the Matal decision.] This decision has now forced the hand of the Fourth Circuit to vacate and remand in an unpublished per curiam opinion the Washington Redskins’ appeal of the district court decision to uphold the PTO’s cancellation of its six trademark registrations as disparaging to Native Americans. [See Mintz Levin’s prior post on this saga.] The Supreme Court’s decision has left nothing to consider for the Fourth Circuit, the district court, and the PTO, which will now have to reinstate the presently cancelled trademark registrations.

On May 18, 2017, the Eleventh Circuit Court of Appeals dismissed a copyright infringement complaint and added further to a circuit split on when copyright “registration” occurs for purpose of filing a copyright infringement complaint. “Registration” of a copyright is required of US copyright owners prior to being able to file suit for copyright infringement (17 U.S.C. § 411(a)). However, there is no consensus on whether registration occurs when an owner files an application to register the copyright or occurs only when the Register of Copyrights actually issues a copyright registration.

In this case, Plaintiff Fourth Estate Benefit Corporation (“Fourth Estate”), a news organization, filed a complaint for copyright infringement against Wall-Street.com, also a news website. Wall-Street.com had obtained copyright licenses for a number of Fourth Estate’s articles, but failed to remove Fourth Estate’s articles upon cancelling its account with Fourth Estate as required by the license agreement. When Fourth Estate filed suit for copyright infringement, the complaint merely alleged that Fourth Estate had filed applications to obtain copyright registrations for the articles, not that any action had yet been taken on the applications by the US Copyright Office.

Selecting and protecting your “brand” should begin from the very moment a business is in the process of being formed, whether that business is a sole proprietorship, partnership, corporation, limited liability company, or some other type of entity. It makes no difference whether the entity is a for-profit or not-for-profit organization, and the size of the entity is also irrelevant. Your “brand” is your public facing identity by which you will be known and through which your reputation will be developed. The goodwill you develop in your “brand” will be one of the most important and valuable assets you own.

The first “brand” a new entity may adopt is its business name. This may be a formal corporate name obtained through a Secretary of State’s office and/or a fictitious business name, such as a trade name or a DBA. Regardless of which type of entity is adopting and using a new name, and regardless of whether the name has been cleared by a Secretary of State’s office, it is critical that an appropriate trademark search be conducted for the new name to ensure that it does not infringe upon the prior existing registered or unregistered trademark rights of a third party. Continue Reading Company “Branding” and the Benefits of Federal Trademark Registration

In a unanimous decision handed down on June 19th, the U.S. Supreme Court struck down as unconstitutional a long-standing prohibition against federal registration of “disparaging” trademarks, finding that the this provision of the Lanham Act violates the Free Speech Clause of the First Amendment.

In the decision handed down on March 22, 2017, Justice Thomas, writing for the majority, ruled that the decorative elements on the cheerleading uniforms (shown below) met the threshold requirement of being a “pictorial, graphic, or sculptural work” that can be granted a copyright if the copyrightable elements are sufficiently original and meet other requirements of the Copyright Act. Slip Op. at 10-11.

As we reported to you last September, the U.S. Supreme Court agreed to hear the case involving the constitutionality of the provisions of the Lanham Act upon which the U.S. Trademark Office relied to deny registration of the rock band name “The Slants.” The hearing before the Court is scheduled for January 18, 2017. We are following this case closely and will report back with all developments. Stay tuned.

In June 2016, the National Hockey League (NHL) announced that Las Vegas would be awarded an NHL franchise team, the first major professional sports team in the city and the first new expansion team for the NHL in over fifteen years. The team announced its name in November—the “Vegas Golden Knights.” But just a few weeks later, on December 7, the team’s trademark application for the name in connection with “entertainment services, namely, professional ice hockey exhibitions” was refused by the U.S. Patent and Trademark as likely to be confused with a registered trademark for GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE, owned by the College of Saint Rose, a Division II member of the NCAA with no hockey team.

Mintz Levin’s Intellectual Property Practice

Protecting and leveraging your intellectual assets is vital to staying competitive and investing confidently in developing new products and services. Mintz Levin’s full-service Intellectual Property Practice can help you optimize your IP resources, whether you are an established company seeking an array of patent and trademark protections, an emerging company seeking to secure strategic business rights, or the owner of a portfolio seeking to harvest the value of dormant patent assets.Read More